Intellectual Property Strategy

3 ways to cut IP acquisition costs

The burgening economic downturn continues to put pressure on all departments of companies to reduce costs. The intellectual property acquisition function is clearly no exception.

So here’s 5 suggestions, what would you add?

1 – review your portfolio to identify pending or registered IP rights of lower value now and in the future, prioritise them, and lapse them (saves on annuities and prosecution costs of any pending applications);

2 – consider filing divisionals or continuations to extend prosecution rather than expend money in the short term on attorneys (of course, the act of filing these applications carries a cost of its own);

4 – use lower cost filing methods, so for example: hire a patent attorney to carry more of the drafting, filing and prosecution costs internally, use PCT or Madrid for international applications, PCTFiler for National Phase entry, etc.

5 – consider blending your current attorneys with a lower cost firm for more routine work.

6 Comments on “3 ways to cut IP acquisition costs”

Thanks TJ – great suggestion.(Apologies to all for promising 3 and delivering 5 suggestions – but better to over deliver, I guess.)Another suggestion of course would be to bring more of your IP work in-house. If your corporate team will allow you the head-count…

The insightful and ever present Jeremy Phillips (this time at IPFinance) has posted a great comment on this post:In global terms, I wonder whether the sort of savings which these
suggestions are likely to achieve are likely to be relatively trivial
in relation to the sort of business that is big enough to have the
option of making them. Might greater savings, or greater
income-generation, be made through cross-licensing of existing
technologies, the adoption of more cost-effective marketing techniques
such as co-branding, the responsible use of alternative dispute
resolution rather than court-driven infringement ligitation; where IP
rights are deemed superfluous, there is plenty of scope for developing
online auction and licensing sites too. Finally, the delaying of
applications in the pipeline looks like a recipe for chaos in the
future if all the businesses within any given sector decide to press on
with their previously-delayed applications at the same time.(Thanks Jeremy)

Jeremy – some quick notes on your great comments:1 – just looking at reducing costs here, not increasing revenues – great points though2 – alternative dispute resolution sounds great, if you can get it to work – I guess that’s what you mean by ‘responsible use’ – often worth a try. However, depending on the economic climate and the situation at hand, it may be better to prioritise which disputes you even take on for a certain period.3 – Delaying applications – I’m flattered that you think my suggestion would have such far reaching consequences. But still, from the perspective of the IP Rights owner, it has some merit, irrespective of a possible greater delay at a point in the future.

Another option is outsourcing your patenting work to India/asia. Cuts down costs for expensive attorneys. I can be hard for non-global companies doing this though.
Another version on your no. 1 is to only do IP that is important for your core business, and not waste money on something you don´t actually sell